Use It Or Lose It – Why You Need To Use Your Trade Mark
This article is an important read for any business which owns a registered trade mark or which has a portfolio of registered trade marks.
The simple fact is that in Australia, a registered trade mark has to be used in order to retain its validity.
If your trade mark is not being used under the control of the registered owner, or if you don’t pay attention to the way it is being used, it could be at risk of removal. At the very least, you may be required to oppose a non-use application by a third party which could be time-consuming and costly.
MMW Trade Mark Services are experts in non-use and trade mark opposition matters and the evidence overwhelmingly shows the benefit of getting qualified advice at the outset if you receive an application for trade mark removal – or if you want to file such an application.
Why you need to use your trade mark
A trade mark is really a case of ‘use it or lose it’. If you own a registered trade mark, you can’t simply ‘set and forget’.
It is incumbent on trade mark owners to take proactive steps to protect their trade marks by conducting regular and thorough reviews of their trade mark portfolios. This will ensure that their valuable assets are not vulnerable to a non-use application by a third party that could see their trade marks being removed from the register for non-use.
Let’s first look at what constitutes ‘use’ of a trade mark in order to get a better understanding of how trade marks can be vulnerable to ‘non-use’ and then we’ll chat about other topics including how to prove use and what to do if someone applies for non-use removal of your trade mark.
What constitutes ‘use’ of a registered trade mark?
Requirements for the level of use and the type of use required to maintain the validity of a registered trade mark vary.
In some countries like the United States for example, trade mark owners need to periodically prove use of their mark in order to maintain its registration. However, in Australia, there is no obligation for a trade mark owner to provide regular evidence that their trade mark is being used.
Once a trade mark has been registered in Australia, it is valid for an initial 10-year period. Thereafter, it can be renewed for ten-year tranches on the timeous payment of renewal fees. A trade mark can be renewed indefinitely.
In order for a trade mark to be considered ‘in use’, it has to be used by the owner of the trade mark, or under its control and under certain grounds applicable must be used in good faith in the course of trade.
It has to be used in the course of business for all the goods and/or services which were covered in the original application, otherwise it may be liable for either partial or full removal. Meaning, it is possible for a third party to seek removal of some of the goods/services from a registered trade mark if such goods/services are not promoted under the trade mark.
It’s worthwhile noting that the amount of use and the frequency of use of a trade mark depends on the nature of the goods or services for which it has been registered.
If the trade mark is being used by a third party or if the business structure is such that there is an umbrella company that holds the intellectual property rights, the correct documentation and agreements need to be in place which support authorised use of the trade mark.
The trade mark owner must be the one exercising control over the use of the trade mark or at least be able to demonstrate that they have financial and operational control as to where and how the trade mark is being used (ie when a third party such as a licensee is using the mark)
What constitutes ‘non-use’ of a trade mark?
If there is non-compliance with any of the above-mentioned factors, a trade mark is at risk of being removed from the trade marks register.
A non-use application can be filed under section 92 of the Trade Marks Act 1995.
What’s more, a registered trade mark may be removed if it is not used in respect of the goods/services captured in the course of trade for the three-year period leading up to one month prior to the removal application being filed.
When might a Non-Use Application be filed?
IP Australia sets out requirements with regards to the continuing use of a registered trade mark and it makes provision for a trade mark to be removed due to non-use.
In some instances, a third party might want to have your trade mark removed from the register because it has been cited by IP Australia as a stumbling block in their own trade mark application. There are only two (2) grounds on which a third party can seek the removal of a trade mark:
- At any time after the application has been filed, on the basis they believe the owner had no intention to use the trade mark for the goods/services on the date the application was filed, and no such use has occurred since the filing.
- Once it has been three years since the mark was entered to the register and there has been no use at all of the trade mark for the goods/services in the three (3) years ending a month before the removal application is filed (for applications filed on or after 24 February 2019 – for applications filed ahead of this date, the legislation is different).
They should obviously only be file a non-use application if they felt there were reasonable grounds to believe there was no evidence of appropriate use of your trade mark for the previous three-year (continuous) period, or that there was no intention to use the trade mark in good faith (depending on the ground selected). However, occasionally these applications are filed in hopes of creating ‘leverage’ to negotiate with a trade mark owner.
It’s also important to note that when a trade mark is registered, protection is only effective for that particular mark as it appears on the application. This means that if your logo is updated or if there are changes to the original trade mark, you may need to reapply for trade mark registration. If you don’t, someone may contest non-use of your original trade mark because it is no longer in use in the form in which it appeared in the primary application. If the ‘new’ logo is essentially the same, with no additions or alterations to the overall impression then such evidence may be sufficient to keep the original registration in place.
You may find this article entitled ‘Do I Need to Apply for Trade Mark Registration When a Logo is Updated?’ helpful for further information on this topic. The bottom line is that there can be no ambiguity about a particular mark and nor can there be any room for misinterpretation.
Who can apply for a trade mark removal for ‘non-use’?
Basically, anyone who wishes to use your unused trade mark can submit a Non-Use application to IP Australia. It can be filed against all or some of the goods and services for which a trade mark has been registered.
One of the key things that trade mark owners need to do is to keep their contact details up to date with IP Australia. The reason for this is that you need time to prepare your opposition should someone apply for your trade mark to be removed. If it’s difficult for the trade marks office to find you, you may not receive the notification within the required timeframe and it could then be too late for you to contest the allegation.
Attention to detail is crucial in the complex world of trade mark law and it is always best to err on the side of caution when it comes to protecting your valuable intellectual property assets.
However, just because someone has filed a non-use application doesn’t mean you have to surrender your rights. It is possible to defend the registration of your trade mark, but of course, in most cases, you need to show use!
How to prove use of a registered trade mark
The onus is on the trade mark owner who is opposing the removal application to prove their case.
In order to prove use, the following is generally required:
- A chain of documentation demonstrating the use of the trade mark in the course of trade in respect of the goods and/or services for which it was registered, ensuring the document reflects the named trade mark owner as being the user, or, where use is by others such use falls within the proper meaning of being ‘authorised users’.
- Valid use on all the goods and/or services for which it was registered (use for some of the goods and/or services may mean in the remainder of the goods/services could be removed
- Examples of the use of the trade mark that may include website promotion of the goods and/or services featuring the trade mark, sales records, advertisements and similar
There may be rare instance where it was not possible to use the mark as intended, or where the Registrar may exercise to keep the trade mark registered even where use is not seen on all claimed goods/services.
Whilst a removal proceeding can be lengthy, ultimately a hearing officer at IP Australia assesses each case, and the evidence,on its individual merits and makes a determination accordingly.
A last word on why you need to use your trade mark
Business owners need to take great care and pay attention to detail when filing an application to register a trade mark. It’s imperative that the right class/es of goods or services are selected upfront and once the application has been approved, it’s imperative that the business is diligent with regards to record-keeping and documentation. And, is critical that the correct legal person files the application at the outset – that is, the legal person (be that an individual or company for example) that has already used the mark for the goods and/or services, or that truly intends to be the user.
MMW Trade Mark Services always recommends to trade mark owners that they do an annual review and audit of their registered trade marks. At face value, this may sound like overkill, but a trade mark is a very valuable asset and it is prudent to protect that asset as far as possible and to minimise any risk.
Letting things slip could result in a removal application against your registered trade mark, and responding and defending your position can be damaging.
If you’d like more information on your rights for using registered trade marks or for any other advice or support on any aspect of trade mark registration here in Australia or further afield, we welcome you to get in touch with our professional and affordable trade marks attorneys. You can contact MMW Trade Mark Services via our website or by calling 03 8288 1432. We’re here to help.
